Mattel, Inc. v. Jozef 4th
Claim
Number: FA0506000491542
Complainant is Mattel, Inc. (“Complainant”), represented
by William Dunnegan of Perkins & Dunnegan,
45 Rockefeller Plaza, New York, NY 10111.
Respondent is Jozef 4th (“Respondent”),
815 Page sui.2, San Francisco, CA 94117.
REGISTRAR
AND DISPUTED DOMAIN NAME.
The
domain name at issue is <barbie.org>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 7, 2005.
On
June 8, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <barbie.org> is registered
with Network Solutions, Inc. and that Respondent is the current registrant of
the name. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
June 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 29,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing contacts,
and to postmaster@barbie.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum has discharged its responsibility
under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) “to employ reasonably available means calculated to
achieve actual notice to Respondent.”
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration Forum's Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any Response from
Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barbie.org>
domain name is identical to Complainant’s BARBIE mark.
2. Respondent does not have any rights or
legitimate interests in the <barbie.org> domain name.
3. Respondent registered and used the <barbie.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Mattel, Inc. is a manufacturer of toys for children. Complainant’s products include dolls, toys, clothes, accessories,
CD-ROM games, and songs.
Complainant first
registered the BARBIE mark with the Principal Register of the United States
Patent and Trademark Office (“USPTO”) in 1962 (Reg. No. 728,811 issued Mar. 20,
1962). Complaint has since renewed its
registration on numerous occasions and obtained other registrations for the
BARBIE mark (E.g., Reg. No. 1,693,139 issued June 9, 1992; Reg. No.
816,601 issued June 18, 1998).
Respondent,
Jozef 4th, registered the <barbie.org> domain name on September
26, 2002. Respondent’s registered
domain name does not resolve to an active website.
Paragraph 15(a)
of the Rules instructs this Panel to “decide a complaint on the basis of the
statements and documents submitted in accordance with the Policy, these Rules
and any rules and principles of law that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent's failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the
absence of a response, it is appropriate to accept as true all allegations of
the Complaint.”).
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
By owning
numerous registrations for the BARBIE mark with the USPTO, Complainant has made
a prima facie case of rights in the mark. See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”). Without
a response from Respondent, the Panel has no evidence to dispute Complainant’s
presumption of rights. Thus, the Panel
must conclude that Complainant has established rights for purposes of Policy ¶
4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of
a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption”).
Respondent’s
<barbie.org> domain name is identical to Complainant’s BARBIE
mark. Although the domain name adds the
generic top-level domain (“gTLD”) “.org,” the Panel finds that the minor
addition does not distinguish Respondent’s domain name from Complainant’s mark
and is irrelevant for purposes of Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA
117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis”); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
claims that Respondent does not have rights or legitimate interests in the <barbie.org>
domain name. This assertion establishes
a prima facie case and places the burden on Respondent to demonstrate
that it does have rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”).
Because Respondent failed to submit a response, it failed to rebut the
Complainant’s assertion and has not met its burden. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). Thus,
the Panel concludes that Respondent lacks rights and legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s
failure to respond is sufficient to satisfy Policy ¶ 4(a)(ii). However, the Panel will continue with an
analysis of Respondent’s rights under Policy ¶ (4)(a)(ii), including the
elements of Policy ¶ 4(c).
Complainant
argues that Respondent does not have rights or legitimate interests in the
disputed domain name because the registered domain name does not resolve to an
active website. Respondent’s passive
holding of the <barbie.org> domain name since September 26, 2002
indicates that Respondent is neither using the domain name in connection with a
bona fide offering of goods or services nor making a legitimate
noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) and (iii). See Am. Online,
Inc. v. Kloszewski, FA 204148 (Nat. Arb.
Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com>
domain name for over six months is evidence that Respondent lacks rights and
legitimate interests in the domain name.”); see also TMP Int’l, Inc. v.
Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Moreover,
Complainant argues that Respondent is not commonly known by the <barbie.org>
domain name and has not acquired any trademark or service mark rights in the
name. There is no evidence that
suggests that Respondent is commonly known by the disputed domain name. In fact, the WHOIS information for
Respondent indicates that Respondent is known as “Jozef 4th” a/k/a “Jozef Pupava.” Thus, the Panel finds that Respondent has
not established rights or legitimate interests in the <barbie.org>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights
or legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
Accordingly,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Although Policy
¶ 4(b) includes a list of four specific situations that constitute evidence of
bad faith registration and use, the Panel is not limited to this list and may
take into account additional evidence in making a finding under Policy ¶
4(a)(iii). See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
The Panel finds that Respondent’s passive holding of the <barbie.org>
domain name for a period of more than two years constitutes bad faith
registration and use under Policy ¶ 4(a)(iii).
See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the
respondent’s failure to develop its website in a two year period raises the
inference of registration in bad faith).
Just as the Panel found in CBS
Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000),
Respondent’s conduct of not using its registered domain name is even stronger
evidence of bad faith given the long use and fame of Complainant’s mark.
Moreover,
Respondent registered the <barbie.org> domain name with
constructive knowledge of Complainant’s rights in the BARBIE mark due to
Complainant’s registration of the mark with the USPTO. The Panel concludes that Respondent’s
registration is evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <barbie.org> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
July 15, 2005
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